Three CJEU cases from 2018-19: Messi, Mitsubishi and Koton James - - PowerPoint PPT Presentation
Three CJEU cases from 2018-19: Messi, Mitsubishi and Koton James Nurton, Lextel Partners Editorial consultant, MARQUES A simplified guide to the CJEU EU Court of Justice (Advocate General) ??? EU General Court Grand Board National courts
James Nurton, Lextel Partners Editorial consultant, MARQUES
EU Court of Justice (Advocate General) National courts EU General Court EUIPO Boards of Appeal Grand Board ???
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Board of Appeal (para 27): “In the Board’s assessment, based on the parties’ arguments (see Article 75 and 76 CTMR), no clear conceptual content will be attributed to the marks by reasonably
sounding and looking words or names. In fact, ‘MESSI’ and ‘MASSI’ are meaningless words for most consumers and the conceptual dissimilarity based on the fame that Lionel Messi enjoys among football fans only concerns part of the public, who is interested in football and sport in general. In the Board’s opinion, there are no elements in the file suggesting that the mark ‘MESSI’ will be conceptually associated to the football player by all the relevant consumers. It must be assumed, therefore, that this conceptual association will not be made, contrary to what the applicant argues, by the whole of the relevant public. For the public who does not associate ‘MESSI’ with the football player, the alleged conceptual dissimilarity will
General Court (para 61) “Dès lors, en l’espèce, il convient de relever que la renommée du nom Messi, en tant que nom de famille du joueur de football mondialement célèbre et en tant que personnage public, constitue un fait notoire, c’est-à-dire un fait qui est susceptible d’être connu par toute personne ou qui peut être connu par des sources généralement accessibles. Ces sources généralement accessibles, mentionnées par le requérant dans sa requête devant le Tribunal, sont des éléments dont la chambre de recours pouvait disposer au moment où elle a adopté sa décision et dont elle aurait dû tenir compte dans le cadre de son appréciation de la similitude des signes sur le plan
renommée du requérant, au point 27 de la décision attaquée, même si elle a estimé à tort que celle-ci était limitée uniquement à la partie du public pertinent qui s’intéresse au football et au sport en général.”
Questions referred ‘(1) (a) Do Article 5 of Directive 2008/95 and Article 9 of Council Regulation No 207/2009 cover the right of the trade mark proprietor to oppose the removal, by a third party, without the consent of the trade mark proprietor, of all signs identical to the trade marks which had been applied to the goods (debranding), in the case where the goods concerned have never previously been traded within the EEA, such as goods placed in a customs warehouse, and where the removal by the third party occurs with a view to importing or placing those goods on the market within the EEA? (b) Does it make any difference to the answer to question (a) above whether the importation of those goods or their placing on the market within the EEA occurs under its
(2) Does it make any difference to the answer to the first question whether the goods thus imported or placed on the market are, on the basis of their outward appearance or model, still identified by the relevant average consumer as originating from the trade-mark proprietor?’
AG Opinion CJEU Judgment “… removal, without the trade mark proprietor’s consent, of signs affixed to goods does not constitute use of a trade mark where: – those goods have not previously been placed on the market in the EEA because they are stored in a customs warehouse where they have undergone alterations to bring them into line with EU technical standards; and – the signs were removed with the aim of importing those goods into the EEA
EEA bearing a (new) trade mark which differs from the original mark.” “… the proprietor of a mark is entitled to
removing all the signs identical to that mark and affixing other signs on products placed in the customs warehouse, as in the main proceedings, with a view to importing them or trading them in the EEA where they have never yet been marketed.”
EUTM application by Mr Nadal Esteban in April 2011 (classes 25, 35 & 39) Earlier marks belonging to Koton (classes 25 and 35)
General Court judgment (Case T-687/16, November 30 2017): “bad faith, within the meaning of Article 52(1)(b) of Regulation No 207/2009, must be assessed, inter alia, in the light of the likelihood of confusion between a sign used by a third party and the sign for which registration is sought, which presupposes identity or similarity not only between the signs, but also between the goods or services in question … bad faith on the part of the applicant for registration presupposes that a third party is using an identical or similar sign for an identical or similar product or service capable of being confused with the sign for which registration is sought.”
Finding bad faith: is Mr Nadal Esteban able to allay the doubts whether the application was filed in good faith by explaining his economic logic?
identical or similar sign as a trade mark, albeit for different goods or services, gives rise to doubts whether an application for registration was filed in good faith
for goods or services for which others enjoy trade mark protection, those doubts become much more significant
services being associated with Koton or of Koton being impaired in future activities
‘Can an EU trade mark or a national trade mark registered in a Member State be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis
If the answer to question (1) is yes, is a term such as 'computer software' too general and covers goods which are too variable to be compatible with the trade mark's function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis
Can it constitute bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services? If the answer to question (3) is yes, is it possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to
Is section 32(3) of the UK Trade Marks Act 1994 compatible with Parliament and Council Directive 2015/2436/EU and its predecessors?’